Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here

From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 23 March 2016

The AmeriKat peeking out from her suitcase, hopingthe dust on the Trunki decision has settled...

A couple of weeks ago, news of the UK Supreme Court's decision in the Trunki Community registered design battle spread like wildfire across Europe, with many claiming it was the end of innovative design protection. Ever responsive to the latest IP developments, the UK Group of AIPPI arranged a Rapid Response seminar with the counsel of the losing and winning teams to share their perspective of the most talked-about decision of 2016 (so far). With the AmeriKat's nose buried under papers, she relied on a helpful paw in the form of Tom Edwards (A&O) to report on yesterday's session hosted at the London offices of Allen & Overy. Over to Tom:

"Press reports rapidly followed after the Supreme Court handed down its decision in Magmatic Ltd v PMS International Ltd [2016] UKSC 12 a couple of weeks ago (see IPKat post here). Many press outlets were sympathetic to Magmatic's loss, decrying that the Supreme Court got it wrong. But did it? That was the topic for discussion at last night's AIPPI Rapid Response event.

The case concerned a Community registered design (CRD) in the Trunki ride-on animal suitcase. Magmatic alleged infringement of its CRD by PMS International’s rival Kiddee case. AIPPI's event provided an ideal opportunity to hear the views of those at the heart of the case with the discussion being led by representatives from both sides (speaking in their personal capacity): Michael Hicks and Jonathan Moss, who had represented Magmatic, and Mark Vanhegan QC, who had appeared for PMS International in the Court of Appeal and Supreme Court. Their slides can be found here.

Some Background

Jonathan Moss kicked off the event with an overview of the case. Moss reminded the audience of some interesting features of Arnold J’s first instance decision (see here) that could easily be overlooked in light of the subsequent appeals, namely:

more than just the Trunki CRD was at issue

Arnold J's judgment provides a clear example of how to apply the test for infringement of unregistered design rights

in finding the Rodeo design, a predecessor to the Trunki, to be prior art Arnold J set a low threshold for a design to be considered as more than just an obscure disclosure under Article 7(1) (of the Community Designs Regulation).

As a reminder, the questions for which permission to appeal in relation to infringement of the Trunki CRD was given were as follows:

(i) whether, when making the assessment of the overall impression created by the Kiddee cases, the Court should take into account the graphical designs printed on the surface of such cases (the “surface decoration”) or whether it should only take into account the features of shape of the Kiddee cases; and
(ii) if the surface decoration is to be taken into consideration, whether the Kiddee cases do not produce on the informed user a different overall impression.

The Trunki case

The key cases relevant to these questions were Proctor & Gamble v Reckitt Benckiser[2007] EWCA Civ 936, in which it was held that a registered design based on a line drawing was for the shape alone, and Samsung v Apple [2012] EWCA Civ 1339, in which Apple had contended that lack of ornamentation was a feature of the simple line drawing of a tablet which they had registered as the design. The Court of Appeal (see here) found that Arnold J had erred in the following respects (as interpreted by the Supreme Court):

i) He had not given proper consideration to the overall impression of the Trunki CRD as an animal with horns;
ii) He failed to take into account the effect of the lack of ornamentation to the surface of the CRD as reinforcing the horned animal impression; and
iii) He ignored the colour contrast in the CRD between the body of the suitcase and its wheels.

Magmatic appealed to the Supreme Court which upheld the Court of Appeal’s decision.

No - they were absolutely correct!

Mark Vanhegan QC took the stage to offer his insights. Focusing on high level, public policy arguments he set out a persuasive case for granting a narrow scope of protection to CRDs. In particular he highlighted the strength of CRDs, both in length (25 years) and due to their absolute nature. The strength of CRDs is amplified when compared to the relative ease with which they can be obtained, via a cheap and quick registration process with no substantive validity assessment prior to grant. The importance of freedom of competition was also emphasised, in light of the fact that design rights are not intended to protect ideas or concepts but specific design articles.

The Kiddee case

Further Vanhegan QC noted that applicants had a wide degree of freedom in choosing how to represent their design. Taking these wider considerations into account, he argued that the Court of Appeal and the Supreme Court had got the test absolutely right in holding that a colour contrast between the wheels and the body of the suitcase should be read as a feature of the Trunki CRD. Further, once it had been acknowledged that this surface feature had intentionally been included, the lack of other surface features on the CRD became significant. As a result the Court of Appeal was correct when assessing infringement to take into account the effect this had on reinforcing the impression of a horned animal, and additionally the influence that the surface features of the Kiddee case had on its design. While an obiter comment, the Supreme Court gave a clear indication that, in its view, lack of ornamentation could be a feature of a design.

Yes - they did get it wrong!

Michael Hicks provided the opposition view, focusing on the legal test. He submitted that if the question as to whether lack of ornamentation could be a feature of a design was indeed an obiter point, the Supreme Court must have reached its decision of non-infringement based on an analysis of shape alone or shape in combination with the added feature of tonal contrast between the wheels and the body of the suitcase. On the other hand, the Court of Appeal had seen the lack of surface decoration as influencing the overall impression of the design and had taken the surface ornamentation of the Kiddee case into account when assessing infringement.

Try as she might, the AmeriKat cannotignore ornamentation...

By assessing infringement in this way, Hicks submitted that the Court of Appeal had in effect taken into account lack of ornamentation as a feature of the Trunki CRD. Despite the difference in approach, the Supreme Court had concluded that the Kiddee Case was sufficiently different from the Trunki CRD as to create a different overall impression, thereby affirming the Court of Appeal’s decision. Hicks challenged the finding that the question as to whether lack of ornamentation could be a feature of a design was not central to the case and, in any event, unarguable.

Paragraph 50 of the judgment was highlighted in which Lord Neuberger first states that there are powerful arguments against the conclusion that lack of ornamentation was a feature of the Trunki CRD and then appears to consider the initial Trunki product and subsequently registered designs as supporting lack of ornamentation being a feature. Hicks suggested that such considerations should not influence the assessment of a registered design.

Practical Steps

Some words of wisdom to potential applicants for CRDs were provided by Vanhegan QC who suggested a three staged approach:

Register a full colour photo of the design

Register the same image devoid of any colour

Register a simple line drawing, devoid of any tonal contrasts.

By registering a design at these varying levels of detail, the rights holder equips himself with a range of options when challenging infringement by competing products. The suggested approach raises the intriguing question as to whether Arnold J’s judgment would still have been overturned had the Trunki CRD been absent of any tonal contrast between the wheels and the body of the suitcase.

The event concluded with questions from the floor, which covered topics ranging from the potential difficulties of registering only part of a design, to the factors the Court will take into account when interpreting a design. The discussion highlighted the uncertainties facing rights holders due to the lack of clear guidance as to how images, both as a whole and particular features, will be interpreted by the courts. In addition the narrow scope of protection ascribed to the Trunki CRD strongly implies that protection against anything other than direct copies of a product is far from guaranteed."

5 comments:

Anonymous
said...

"The suggested approach raises the intriguing question as to whether Arnold J’s judgment would still have been overturned had the Trunki CRD been absent of any tonal contrast between the wheels and the body of the suitcase?"

That's a great question.

Does a RCD representation filed only as a black line drawing only project a white variant of the design?

If the representation shows the product shaded red, will that only protect a red product?

It is very clear from the decision (see paras 33 and 34) that no colour does indeed protect all colours, and conversely that where a colour is shown then the design is limited to claiming that colour as part of hte design.

Whilst the judgment makes the position clear in relation to colour, it does not make the same finding in relation to tonal contrast. If the wheels on the Trunki CRD had been the same shade as the rest of the CRD would it have covered a Kiddee case which had the wheels (and wheel covers) shaded differently from the rest of the case (eg. the Leopard or Pig Kiddee case designs which can be found via a quick google)? (Assuming but for that infringement would have been found, which is by no means clear from the judgment)

Extending the colour rule to tonal contrast would seem to suggest that it would. However equally the obiter comments that lack of ornamentation can be a feature would seem to suggest that a design without any tonal contrast shown could be said to be claiming a uniform colour (albeit any colour) as a feature.

Which raises the question as to how you distinguish between claiming a shape with lack of tonal contrast being a feature and claiming just a shape with the lack of tonal contrast not meaning anything. Given that you cannot use words when registering a design, it is difficult to see how this could be achieved. Apple v Samsung seems to suggest that there is a design convention that certain dashed markings on the drawing can indicate lack of ornamentation, however I don't know if there is a similar convention for lack of tonal contrast (which doesn't exclude other surface decoration as well). I guess the same issue arises in relation to claiming the colour white as a feature of a design and presumably there is a way of doing so (though I don't know what it is).

Having mentioned them above and given that the tonal contrast seemed to be one of the features which swung the balance away from the Kiddee cases infringing the Trunki CRD, I would be interested to know what the position is in relation to the Leopard and Pig Kiddee Cases - was it accepted that they were infringing? Or are they covered by the non-infringement decision? Anyone know? Given the tonal contrast point was in issue, it seems surprising that they are not mentioned in the judgment.

I think if you file photographs or CAD drawings then it is likely that showing absence of tonal contrast could be interpreted as claiming a uniform colour. If you want to claim just the shape, irrespective of any colour, contrast or decoration, then line drawings should achieve that.

I am afraid I don't know the position in respect of the other cases from memory.

"how you distinguish between claiming a shape with lack of tonal contrast being a feature and claiming just a shape with the lack of tonal contrast not meaning anything"

My understanding from Procter & Gamble is that when it comes to considering the infringing article, any tones on it would be ignored and thus it would have no tonal contrast. The result would therefore be the same regardless of whether lack of tonal contrast was intended to be a feature of the registered design or not.

So consider the Trunki registration, but with renders simply showing a completely white case shaded to show the contours. It would not matter if the intention was that that was part of the "design". An embodiment of that case would clearly infringe if it was plain white, but also if it had contrasting tones and surface decoration, because it would be clear that the design was for the particular contours of the case.

I guess the process is similar to construing a claim in a patent. With the Apple v Samsung case, Apple argued that lack of ornamentation was a feature of the design, presumably to avoid rather fussy prior art. But if there was no such prior art, then they may have argued for a broader "overall impression" and caught the Samsung tablet.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!